No Acts & Articles mentioned in this case
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 20626 OF 2021
WITH
LEAVE PETITION NO. 295 OF 2021
IN
COMMERCIAL IP SUIT NO. 18 OF 2022
WITH
COMMERCIAL IP SUIT NO. 18 OF 2022
Pidilite Industries Limited … Applicant/
Plaintiff
Versus
Innovation Coatings Pvt. Ltd. … Defendant
******
Mr. Hiren Kamod a/w Mr. Nishad Nadkarni, Mr. Aasif Navodia,
Ms. Khushboo Jhunjhunwala, Ms. Rakshita Singh and Ms. Jaanvi
Chopra i/by Khaitan & Co. for Applicant/Plaintiff.
Mr. Alankar Kirpekar a/w Mr. Shekhar Bhagat, Mr. Ayush Tiwari,
Mr. Rajas Panandikar, Chinmay Pagedar i/by Shekhar Bhagat and
Neelaja Kirpekar for Defendant.
******
CORAM: MANISH PITALE, J.
RESERVED ON : 1
st
APRIL 2025
PRONOUNCED ON : 25
th
APRIL 2025
P.C. :
. In these proceedings, the applicant/plaintiff is asserting its
intellectual property rights in its registered trade mark “1K PUR”,
which is used in connection with adhesive products of the
applicant along with its well known registered trade mark/house
mark “FEVICOL”. The applicant claims that the said adhesive 2025:BHC-OS:6960
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product bearing the registered mark “1K PUR” is one component
ready to use moisture curing fast setting adhesive with gap filling
properties. The details of registration of the said trade mark “1K
PUR” independently and in association with the said house mark
“FEVICOL”, are given in paragraph 16 of the plaint. Registration
certificates are also annexed to the plaint, which show that for the
registered trade mark “1K PUR”, the registration dates back to 20
th
July 2013 with user claim since 13
th
October 2006, while the
registration for the mark “FEVICOL 1K PUR” also the dates back
to 20
th
July 2013 with user claim since 13
th
October 2006. The
applicant also has registration for the label mark/device mark
, showing that the registration dates back to 3
rd
January
2008. The applicant has also given details in paragraph 17 of its
registration in respect of the said trade mark “1K PUR” in
international jurisdictions.
2.As regards sales figures pertaining to products bearing the
mark “1K PUR” of the applicant, it is stated that there is steady
increase in the sales turnover between 2006 to 2021. While the
sales figure for the year 2021 is stated to be approximately Rs.86
lakhs, the total sales turnover between 2006 to 2021 adds upto
Rs.484 lakhs. The applicant has also given sales turnover figures of
such products outside India. It is stated that substantial amounts
were also spent towards promotional expenses in respect of the
said products bearing the mark “1K PUR”. On the basis of such ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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pleadings and documents filed in support thereof, the applicant
claims statutory rights in its registered trade mark “1K PUR”, as
also common law rights on the basis of continuous use since 2006.
3.It is further pleaded that the applicant came across adhesive
products of the defendant in March 2021, which show that the
product was bearing the mark “INOVA 1K PUR”. It was also
found that the defendant was selling and advertising the impugned
product through third party e-commerce websites and in this
backdrop, on 16
th
March 2021, the applicant sent a cease and
desist notice to the defendant, specifically alleging that by using
the impugned trade mark “INOVA 1K PUR” on its adhesive
product, the defendant was indulging in infringement of the
registered trade mark of the applicant and that it was passing off
its product as that of the applicant. The said letter was delivered
by email to the defendant, but the notice sent through registered
post returned with the remark “office closed”. It is stated that the
applicant did not receive any response from the defendant to the
said cease and desist notice. It is further pleaded that since covid-
19 pandemic had hit the Nation, the applicant could not
immediately pursue further action, although it was under a belief
that the defendant would have stopped indulging in such conduct
upon receiving the notice from the applicant. But, towards the end
of July 2021, the applicant is stated to have come across trade
mark application filed by the defendant on 5
th
April 2021, seeking
registration of the impugned trade mark “INOVA 1K PUR” in class ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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1, on proposed to be used basis. The examiner of the trade marks
raised objection to the said application and the same was found to
be pending. It is the case of the applicant that the defendant by
filing the said application on 5
th
April 2021 for registration of the
impugned trade mark “INOVA 1K PUR”, after having received the
cease and desist notice from the applicant, shows the malafide and
dishonest conduct of the defendant. The applicant reiterated the
said pleadings made in the plaint and pressed for interim reliefs in
the application.
4.The defendant filed its reply affidavit stating that the
applicant had indulged in falsehood and suppression while seeking
reliefs in the present proceedings. It was claimed that the
defendant was using “1K PUR” on its product as a trade
description, which literally means one component polyurethane
resin and that the applicant had fraudulently obtained registration
for such trade description. It was specifically stated in the reply
that despite registration of the mark of the applicant i.e. 1K PUR,
the applicant cannot claim any exclusive right to use the same,
particularly when it could be demonstrated that since the year
1930, PUR is a known abbreviation for polyurethane resin/reactive
and 1K means one component. Such a generic trade description
can certainly not be used by the applicant exclusively as its trade
mark.
5.The defendant further alleged that the photograph of the
applicant’s product annexed to the plaint was a misrepresentation ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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as the actual product used the words Moisture Curing 1K
Polyurethane Adhesive, while in the photograph at Exhibit ‘F’ to
the plaint, the words “1K” were deliberately suppressed and
deleted. It was submitted that such conduct falsified the statement
of truth filed on behalf of the applicant along with the plaint and
on this ground also the application as well as the suit deserved to
be dismissed.
6.Thereafter, the defendant pleaded about the history of use of
PUR extensively in patent literature, which allegedly demonstrated
common use of the trade description 1K PUR and 2K PUR, much
prior to the applicant’s claim of first use in the year 2006. In that
regard, the defendant in its reply referred to patents of the years
1996 and 2004. It was further pleaded that the expression “1K
PUR” was common to trade and its origin pertained to the German
word “Komponente”, which means “Component”. Along with the
reply, the defendant placed on record the photographs of various
products, wherein the expression “1K PUR” was freely used in
paints, adhesives and other such products. It was further stated
that the defendant had moved the application for registration of
its trade mark “INOVA 1K PUR”, wherein “1K PUR” was being
used as a generic trade description, in which the defendant was
not claiming any exclusive right. On this basis, it was further
submitted that the filing of the said application for registration of
the trade mark “INOVA 1K PUR” cannot prevent the defendant
from challenging the very registration of the trade mark of the ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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applicant i.e. “1K PUR”. On this basis, it was submitted that the
application deserved to be dismissed.
7.The applicant filed rejoinder affidavit in the application and
refuted the contention raised on behalf of the defendant. It is to be
noted that according to the defendant, the stand taken by the
applicant in the rejoinder affidavit as regards the manner in which
the registered mark “1K PUR” was adopted, is contrary to the
stand taken originally in the plaint.
8.Mr. Hiren Kamod, learned counsel appearing for the
applicant/plaintiff referred to pleadings and documents on record,
including the reply affidavit and the rejoinder affidavit filed in the
present application. He made submissions to deal with the
contentions raised on behalf of the defendant. It was submitted
that the defendant cannot claim that “1K PUR” is a commonly
used trade description or it is common to trade, for the reason that
the defendant itself has applied for registration of its trade mark
“INOVA 1K PUR” and that therefore, the defendant is estopped
from raising such a plea. In this regard, reliance was placed on
judgment of this Court in the case of Jagdish Gopal Kamath &
Ors. v/s. Lime & Chilli Hospitality Services, 2015 SCC OnLine
Bom 531. It was submitted that when 1K PUR forms a leading
feature in the impugned mark of the defendant itself, it cannot lie
in its mouth to claim that 1K PUR is common to trade or it is
commonly used as a trade description. It was emphasized that the
defendant has not incorporated any disclaimer in its application. ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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As regards the leading and essential features of a mark, the learned
counsel placed reliance on judgments of this Court in the case of
Pidilite Industries Limited v/s. Jubilant Agri & Consumer Products
Limited, 2014 SCC OnLine Bom 50, as also Ultra Tech Cement
Limited v/s. Alaknanda Cement Pvt. Ltd. & Anr., 2011 SCC
OnLine Bom 783.
9.It was emphasized that the defendant itself was using 1K
PUR as a trade mark and hence, it cannot fall back on the
contention that the same is a commonly used trade description. It
was further submitted that the defendant cannot casually raise the
contention regarding common to trade or 1K PUR being a
commonly used trade description without placing on record
material to show substantial and extensive use of the same in
India. In this regard also reliance was placed on the said judgment
of the Supreme Court in the case of Jagdish Gopal Kamath & Ors.
v/s. Lime & Chilli Hospitality Services (supra). It was submitted
that the reply affidavit of the defendant fails to satisfy the high
standard required to show substantial and extensive use of 1K
PUR as a trade description or it being common to trade in India.
10.It was further submitted on behalf of the applicant that the
defendant cannot rely upon the German word “Komponente” as
the origin for the expression 1K, to claim that it is a commonly
used trade description in India, for the reason that the said word is
not commonly used or understood in India. In that regard,
reliance was placed on judgments of this Court in the case of ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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Laboratories Griffon Private Limited v/s. Griffon Biometrix
Private Limited, 2022 SCC OnLine Bom 6613 and Kamani Oil
Industries Pvt. Ltd. v/s. Bhuwaneshwar Refineries Pvt. Ltd., 2014
SCC OnLine Bom 595. In this context, it was further emphasized
that 1K PUR does not have any meaning in the mind of an average
consumer. It was further emphasized that even according to the
defendant its adoption and use of 1K PUR is much subsequent to
the applicant’s use of the same from the year 2006 onwards. In
respect of addition of only the word “INOVA” to the applicant’s
registered trade mark “1K PUR”, it was submitted that as per
settled law laid down by the Supreme Court as far back as in the
year 1969 in the case of Ruston & Hornsby Ltd. v/s. Zamindara
Engineering Co., 1969 SCC OnLine SC 329, mere addition of a
word cannot be of any advantage to the defendant and that a case
for infringement is clearly made out.
11.As regards the contentions raised by the defendant under
Section 30(2)(a) of the Trade Marks Act, 1999 (hereinafter
referred to as ‘Trade Marks Act’), it was submitted that the
defendant cannot claim that its use of 1K PUR was for indicating
the kind and quality of its product, but the same was being used
evidently as a trade mark and hence, it was being perceived by the
consumers as such. It cannot be claimed by the defendant that its
mark was being used bonafide to describe the kind and quality of
its product. In respect of the contentions raised by the defendant
by relying on Section 35 of the Trade Marks Act, it was submitted ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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that the same cannot be of any assistance to the defendant for the
reason that the adoption of the impugned mark “INOVA 1K
PUR”, wherein “1K PUR” is a leading feature, is obviously
dishonest.
12.As regards the contention of the defendant that the
registration of applicant’s mark “1K PUR” itself is invalid, it was
submitted that the defendant does not satisfy the limited scope
available for raising such a plea as per the judgment of Full Bench
of this Court in the case of Lupin Ltd. v/s. Johnson and Johnson,
2014 SCC OnLine Bom 4596. It was submitted that the defendant
has not been able to demonstrate that the registration of the
applicant’s trade mark can either be categorized as ex-facie illegal
or fraudulent or that it would shock the conscience of this Court.
Reliance placed on Section 36 of the Trade Marks Act on behalf of
the defendant was also criticized on the ground that the said
provision is clearly unavailable to the defendant as the same
requires use of certain words in a widespread manner to the extent
that no one can claim monopoly over such words or expressions.
It was emphasized that reliance placed on behalf of the defendant
on some patents was of no consequence because such patents did
not pertain to any inventions titled 1K PUR and that such patents
simply referred to one component polyurethane as an ingredient
of specification in the patent.
13.The learned counsel for the applicant referred to the
judgments upon which the defendant had placed reliance, stating ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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that the said judgments are inapplicable to the facts of the present
case because the said cases concerned expressions like “MICRO”,
“OXY”, or “THYROX” that were being commonly used as
description terms and in such cases, the Court found that they
could not be used as trade marks. It was submitted that, in the
present case, the applicant has openly, continuously and
commercially used its mark 1K PUR since the year 2006 and that
it has valid registration from the year 2013, while the defendant
on its own showing started using its mark, of which 1K PUR is a
leading essential feature, only from the year 2021. It was
submitted that the defendant has not placed on record any sales
figures or such material in support of its contentions and on this
ground also, the same deserve to be rejected. It was submitted that
there is every possibility of a consumer being confused between
the two products and therefore, the applicant has made out a
strong prima facie case as regards infringement and passing off,
thereby justifying the grant of prayers made in the present
application.
14.On the other hand, Mr. Alankar Kirpekar, the learned
counsel appearing for the defendant submitted that the aspect of
suppression and falsehood, on the part of the applicant was
already highlighted in the reply affidavit. The photograph of the
product of the applicant did not match with the actual product
and on this ground alone, the application as well as the suit
deserve to be dismissed. Apart from this, it was submitted that the ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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applicant failed to make out its case on merits and therefore, the
interim application ought to be dismissed.
15.It was vehemently submitted on behalf of the defendant that
1K PUR can never be treated as a trade mark, but only as a trade
description in order to describe the kind of product i.e. one
component polyurethane adhesive. It was emphasized that 1K
PUR was nothing but a commonly used trade description and this
was evident from the manner in which the said expression was
used in various products, including adhesives and paints, apart
from the fact that the said expression found wide usage in patents
registered all over the world. It was further submitted that the very
fact that the applicant uses the words 1K Polyurethane on its
product, shows that 1K PUR is being used as a trade description
and that it is the applicant that is blowing hot and cold at the same
time, by getting its trade mark 1K PUR registered, although it is
nothing but a trade description.
16.It was emphasized that patents published at least from the
year 1996, much prior to the year 2006, used the expression 1K
PUR in respect of one component polyurethane adhesive, thereby
demonstrating that the same was nothing but a common trade
description and that it was also common to trade. On this basis, it
was emphasized that the very registration of the expression 1K
PUR as a trade mark can be said to be ex-facie illegal and
fraudulent, thereby satisfying the test contemplated under the Full
Bench judgment of this Court in the case of Lupin Ltd. v/s. ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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Johnson and Johnson (supra).
17.Much emphasis was placed on judgments of the Supreme
Court in the cases of Corn Products Refining Co. v/s. Shangrila
Food Products Ltd., (1960) 1 SCR 968 and J.R. Kapoor v/s.
Micronix India, 1994 Supp (3) SCC 215 and judgments of this
Court in the case of Shelke Beverages Private Ltd., v/s. Rasiklal
Manikchand Dhariwal & Anr., 2010 SCC OnLine Bom 471,
Macleods Pharmaceuticals Limited v/s. Intas Pharmaceuticals Ltd.
& Ors., (2013) 55 PTC 380, Datamatics Global Services Limited
v/s. Royal Datamatics Private Limited, (2016) 66 PTC 52 and
Ultratech Cement Ltd. & Ors. v/s. Dalmia Cement Bharat Ltd. &
Ors., 2016 (5) Bom CR 100, in support of contention that
commonly used trade description cannot be part of trade marks
and that a particular party cannot claim exclusivity over such
commonly used trade description. This was particularly important
in the present case for the reason that the defendant in its
application for registration of the trade mark “INOVA 1K PUR” is
not seeking any exclusivity for 1K PUR, as it is a commonly used
trade description. INOVA and FEVICOL are completely different
and therefore, the applicant cannot raise any grievance against the
defendant. As the applicant is also using 1K PUR, which is a
commonly used trade description, the limitation under Section 30
of the Trade Marks Act would certainly apply and the applicant
cannot maintain the present action against the defendant alleging
infringement. ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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18.The learned counsel for the defendant specifically relied on
Section 36 of the Trade Marks Act and in that context, relied upon
Commentary of Venkateswaran on Trade Marks and Passing Off
(Seventh Edition). By placing reliance on the same, it was
contended that exclusive use of a trade mark is deemed to have
been ceased on the date when the use of the words descriptive in
nature first become well known and established or two years after
expiration of the patent in which such words are used. It was
submitted that in the light of the material placed on record as
regards patents, at least from the year 1996 using the expression
“1K PUR”, the effect of Section 36 of the Trade Marks Act clearly
demonstrates that despite registration of the trade mark “1K
PUR”, the applicant cannot assert its exclusive rights therein and
that the present application deserves to be dismissed.
19.The rival submissions are considered in the light of the
material placed on record. The certificates of registration issued by
the Trade Marks Registry show that the applicant has registration
for its trade mark “1K PUR” and “FEVICOL 1K PUR” dating back
to 20
th
July 2013 with user claim since 13
th
October 2006. The
registration of the label mark/device mark of the applicant
dates back to 3
rd
January 2008. The aforesaid documentary
material indeed shows that the applicant is entitled to claim
statutory protection and rights in respect of the trade mark “1K
PUR” in the light of the said registrations in its favour. ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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20.As opposed to this, the defendant applied for registration of
the impugned trade mark “INOVA 1K PUR” on 5
th
April 2021 on
proposed to be used basis. It is the case of the applicant that it
came across adhesive products of the defendant in March 2021,
bearing the aforesaid impugned trade mark and that the impugned
products of the defendant were found on third party e-commerce
websites in March 2021. In this backdrop, on 16
th
March 2021,
the applicant issued cease and desist notice to the defendant. Thus,
it is claimed that after the defendant received the cease and desist
notice, it applied for registration of the impugned trade mark
“INOVA 1K PUR” in class 1 on proposed to be used basis before
the Trade Marks Registry.
21.In this situation, when the trade mark of the applicant i.e.
“1K PUR” and its variants are registered, the defendant has taken a
stand attacking the very registration of the trade mark of the
applicant and it has claimed that, in any case, the mark “1K PUR”
is common to trade and a commonly used trade description of one
component polyurethane resin adhesive. The defendant has also
claimed that it is using “1K PUR” in a descriptive sense in the
impugned trade mark “INOVA 1K PUR” and that it is not claiming
any exclusivity in “1K PUR” as regards its own trade mark. On this
basis, it is claimed that since “INOVA” on the one hand and
“FEVICOL” of the applicant on the other hand cannot be said to
be similar in any manner, the applicant can have no grievance.
22.Before considering the contentions pertaining to common to ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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trade and commonly used trade description, it would be
appropriate to first consider the question as to whether the
defendant is using the expression “1K PUR” as a trade mark. In
this context, when the impugned trade mark of the defendant
“INOVA 1K PUR” is considered, it is evident that “1K PUR” forms
a leading and essential feature of the said trade mark of the
defendant. This Court is unable to agree with the defendant that
“1K PUR” is used in a descriptive sense, indicating the nature of
the adhesive. In the application filed by the defendant for
registration of its trade mark “INOVA 1K PUR”, the defendant has
not incorporated any condition or limitation to the use of the
impugned trade mark and registration is sought for the entirety of
the trade mark i.e. “INOVA 1K PUR”. On the impugned product,
the defendant has used the words “Moisture Curing Polyurethane
Adhesive” in a descriptive sense to state the nature of the adhesive.
It is clear from the manner in which the impugned trade mark
“INOVA 1K PUR” is being used on the impugned product, that
“1K PUR” forming an integral and essential feature of the trade
mark is used in a trade mark sense and not in a descriptive sense.
Therefore, the defendant is not justified in seeking to defend its
position by stating that it is not claiming any exclusivity in “1K
PUR” while incorporating the same in its impugned trade mark
“INOVA 1K PUR”. In this context, the definition of trade mark
under Section 2(1)(zb) of the Trade Marks Act becomes relevant as
it states that trade mark means a mark capable of being
represented graphically and which is capable of distinguishing ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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goods or services of one person from those of others.
23.In this backdrop, when the registered trade marks/label mark
of the applicant are considered i.e. “1K PUR”, “FEVICOL 1K
PUR” and , this Court finds that “1K PUR” due to
continuous use since the year 2006 with registrations dating back
to the years 2008 and 2013, can be said to be a product
identification mark/brand. This is because the house mark of the
applicant i.e. “FEVICOL” has been in use for a considerable period
of time. But, in conjunction with the trade mark “FEVICOL”, the
applicant has a number of sub-brands or product identification
marks/brands, which distinguish one product from the other. This
aspect was noted in the judgment of this Court in the case of
Pidilite Industries Limited v/s. Jubilant Agri & Consumer Products
Limited (supra), when the mark “MARINE” was identified as such
a product identification mark/brand or sub-brand of “FEVICOL”.
There is substance in the contention raised on behalf of the
applicant that “1K PUR” as a trade mark and a label mark is also
one such product identification mark/brand or sub-brand of the
applicant, which in itself serves the purpose of identifying and
distinguishing one product from the other.
24.In the aforesaid judgment of this Court in the case of Pidilite
Industries Limited v/s. Jubilant Agri & Consumer Products
Limited (supra), this Court has also accepted the contention raised
on behalf of the very same applicant/plaintiff that normally the ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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persons purchasing the products of the plaintiff herein and the
defendant are carpenters and they would ask for a product by
referring to such a product identification mark/brand or sub-
brand, depending on the purpose for which such a product is to be
utilized. Hence, a carpenter would specifically ask for a “1K PUR”
product when such an adhesive is required for a specific purpose
as opposed to another type of adhesive. But, at the same time, this
in itself does not mean that “1K PUR” can be said to be a
commonly used trade description, for the reason that such a
consumer (mainly carpenters) do not understand “1K PUR” to
mean one component polyurethane resin adhesive, but they
identify the mark “1K PUR” with the product of the applicant.
Hence, this Court is unable to agree with the defendant that “1K
PUR” is a commonly used trade description, in which the applicant
cannot claim exclusivity despite registration of the same as a trade
mark for the past 12 years with user claim for the past about 20
years. So long as the defendant is also using “1K PUR” as a mark
and not as a description of its product, a strong prima facie case is
indeed made out by the applicant in its favour to seek appropriate
interim relief against the defendant.
25.It is also relevant to note that even in the products of the
applicant, the words “moisture curing polyurethane adhesive” are
used and it is this part that can be said to be descriptive in nature
instead of the trade mark “1K PUR” being labelled as a commonly
used trade description. Therefore, the contentions raised on behalf ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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of the defendant to attack the registered trade mark “1K PUR” of
the applicant by claiming that the same is a commonly used trade
description, cannot be accepted.
26.The defendant has further claimed that “1K PUR” as an
expression is common to trade or publici juris. It is settled law that
a party asserting that a word or expression has become common to
trade or publici juris, must place on record substantial material to
support such a contention. The assertions regarding common to
trade or publici juris cannot be made by simply referring to certain
material in the public domain, showing the use of a particular
expression. The party is required to satisfy the test of extensive,
actual and continuous use of such an expression in the market,
which necessarily entails detailed material to be placed on record
showing sales figures and other such material of third parties using
such an expression or mark extensively, substantially and
continuously. This Court has emphasized on the said position of
law in the judgment in the case of Pidilite Industries Limited v/s.
Jubilant Agri & Consumer Products Limited (supra) and also
Jagdish Gopal Kamath & Ors. v/s. Lime & Chilli Hospitality
Services (supra).
27.Applying the aforesaid test to the material placed on record
on behalf of the defendant in the present case, shows that the
defendant has simply referred to products in the adhesive and
paint industries, wherein “PUR” or “1K PUR” has been used.
There is no material placed on record to show substantial, ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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continued, extensive and actual use of the said expression as a
trade mark. There is no material to show that third parties have
been using the said expression as a mark along with supporting
material like substantial sales figures etc, to support the contention
of common to trade or publici juris. Therefore, the said contention
raised on behalf of the defendant cannot be accepted.
28.An attempt was made on behalf of the defendant to claim
that the alphabet “K” used in the mark “1K PUR” refers to the
word “Komponente” in German language and that it is a
commonly used trade description in India. This Court is unable to
agree with the said contention raised on behalf of the defendant,
for the reason that the aforesaid German word “Komponente” is
hardly understood in India and it would be stretching the matter a
bit too far to expect that a carpenter and other such persons, who
purchase adhesives from the market to understand “1K PUR” as
one Komponente polyurethane resin adhesive. Even if a word or
expression may be commonly used in another jurisdiction or
Country, in the absence of the same being used commonly in
India, a party cannot claim that the said word is commonly used in
trade and hence, cannot form part of a trade mark. The law laid
down by this Court in the cases of Laboratories Griffon Private
Limited v/s. Griffon Biometrix Private Limited (supra) and Kamani
Oil Industries Pvt. Ltd. v/s. Bhuwaneshwar Refineries Pvt. Ltd.
(supra) is correctly relied upon by the applicant in this context.
29.An attempt was made on behalf of the defendant to claim ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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that by adding the word “INOVA” to the words “1K PUR”, the
impugned trade mark of the defendant had become distinctive.
But, the said contention is in the teeth of the said position of law
laid down by the Supreme Court in the case of Ruston & Hornsby
Ltd. v/s. Zamindara Engineering Co. (supra), wherein it was laid
down that mere addition of a word to the mark in question cannot
be of any advantage to a party and that a case of infringement is
indeed made out. It cannot be denied that in the impugned trade
mark “INOVA 1K PUR”, the expression “1K PUR” does form a
leading and essential feature and therefore, the defendant cannot
claim that looking at its mark in entirety, it cannot be said to be
infringing upon the registered trade mark “1K PUR” of the
applicant.
30.The defendant has heavily relied upon Section 36 of the
Trade Marks Act, particularly by placing reliance on certain
patents from the year 1996 onwards. It is the case of the
defendant that since such patents are in public domain for a
considerable period of time, wherein one component polyurethane
adhesive has been referred to at multiple places as “1K PUR”, on
the lapsing of the patent and passage of time, no one can claim
exclusivity in the expression or mark “1K PUR”. But, a perusal of
the documentary material placed on record in this context, shows
that in the literature pertaining to the patents at some places “1K
PUR” may have been referred to as an expression or a word, but
the patent itself did not relate to any product or invention bearing ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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the title “1K PUR”.
31.The defendant also relied upon Full Bench judgment of this
Court in the case of Lupin Ltd. v/s. Johnson and Johnson (supra)
to contend that the registration of the trade mark “1K PUR” could
be said to be ex-facie illegal or fraudulent. As per the said Full
Bench judgment of this Court, a very narrow window is available
for granting interim relief in the context of a registered trade mark
and the Court is required to come to a conclusion that such
registration is either ex-facie illegal or fraudulent or that it shocks
the conscience of the Court. In the present case, this Court is
unable to reach to a conclusion that the registration of the trade
mark “1K PUR” of the applicant can be said to be ex-facie illegal
or fraudulent or that it would amount to shocking the conscience
of this Court. The material placed on record on behalf of the
applicant does show continuous commercial user of the mark “1K
PUR” in respect of its adhesives by the applicant from the year
2006, with registration of the said trade marks/label mark dating
back to the years 2008 and 2013. The defendant is unable to
demonstrate how such registration can be said to be in the teeth of
the statutory requirements under the provisions of the Trade
Marks Act.
32.It was sought to be indicated that such a commonly used
trade description could not be registered as a trade mark, but the
defendant cannot be permitted to make such an argument in the
light of the fact that the defendant has itself applied for ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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registration of its trade mark “INOVA 1K PUR”, wherein “1K
PUR” does form a leading and essential feature. As laid down by
this Court in the case of Pidilite Industries Limited v/s. Jubilant
Agri & Consumer Products Limited (supra) and Jagdish Gopal
Kamath & Ors. v/s. Lime & Chilli Hospitality Services (supra), a
party cannot be allowed to blow hot and cold at the same time.
Hence, the principle of estoppel would apply against the
defendant in the facts and circumstances of the present case.
33.This Court is also of the opinion that the defendant by
adopting “1K PUR” in its trade mark and having failed to make
out a case about the same being a commonly used trade
description, can be said to have adopted it in a dishonest manner.
A prima facie case is indeed made out by the applicant in its favour
to claim that such adoption of “1K PUR” in the impugned trade
mark can be said to be dishonest and that this factor ought to
operate against the defendant. The documents on record show
that after the applicant sent the cease and desist notice dated 16
th
March 2021 to the defendant, immediately on 5
th
April 2021, the
defendant submitted its application for registration of the
impugned trade mark “INOVA 1K PUR” in class 1 on proposed to
be used basis. The defendant in its application did not specify any
condition or limitation to the use of the trade mark, despite the
fact that in these proceedings before this Court, the defendant
states that it is not claiming any exclusivity in the expression “1K
PUR” in its trade mark “INOVA 1K PUR”. If the defendant had ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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really proceeded on the basis that it was not claiming any
exclusivity in the expression “1K PUR” in its trade mark “INOVA
1K PUR” and that the same was being used purely in a descriptive
manner, the same would have reflected in its application submitted
before the Trade Marks Registry. This is all the more significant
because the defendant is seeking registration for its mark as a word
mark.
34.Apart from this, being in the business of adhesives, the
defendant cannot be heard to say that it had not come across the
registered trade mark “1K PUR” of the applicant, although the said
registered trade mark of the applicant was in the public domain
from the year 2006 and the trade marks/label mark enjoy
registration from the years 2008 and 2013. As per the law laid
down by this Court in the case of Bal Pharma Ltd. v/s. Centaur
Laboratories Pvt. Ltd. & Anr., 2001 SCC OnLine Bom 1176,
while applying for registration of a trade mark, the applicant for
such a trade mark is expected to carry out a reasonable search in
the Trade Marks Registry to verify as to whether its mark is
similar/identical to a mark already on the register of the Trade
Marks Registry. Therefore, not only is the defendant blowing hot
and cold at the same time by doubting the registration of the trade
mark of the applicant on the one hand and on the other hand
applying for registration of its own mark, of which one of the
leading feature is the very mark of the applicant, it is also taking
the risk of seeking registration when the trade mark “1K PUR” of ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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the applicant is already registered and forms part of the register of
the Trade Marks Registry. Therefore, there is substance in the
contention, raised on behalf of the applicant that prima facie the
adoption of the trade mark “INOVA 1K PUR” by the defendant
can be said to be dishonest and with an intention to ride upon the
goodwill of the applicant.
35.It is to be noted that the applicant has placed on record
sufficient material to show the extent of sales turnover and the
goodwill earned by the applicant in the context of the said
registered trade mark “1K PUR” that enjoys registration from the
years 2008 and 2013, with user claim since the year 2006. A
strong case is made out by the applicant to claim that by
incorporating “1K PUR” as a leading and essential feature in the
impugned trade mark “INOVA 1K PUR”, the defendant is seeking
to pass off its products as that of the applicant and therefore, a
prima facie case for the action of passing off is made out against
the defendant. It is also relevant to note that the defendant has not
placed on record any material with regard to its sales turnover and
other such aspects to indicate as to what goodwill it may have
earned in respect of the impugned trade mark “INOVA 1K PUR”.
36.Apart from this, the material brought to the notice of this
Court on behalf of the applicant, on the basis of search conducted
on the internet, shows that on third party e-commerce websites
like indiamart.com, when the products of the defendant are
searched, the first entry is seen as “FEVICOL” adhesive and below ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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that the words “INOVA 1K PUR” are found. This further
demonstrates that a strong prima facie case of dishonesty on the
part of the defendant is made out and the defendant has taken
such steps to illegally ride over the goodwill of the applicant in the
business of adhesives, particularly in the context of the registered
trade mark “1K PUR”.
37.It has been argued on behalf of the defendant that the
plaintiff has misrepresented its product in the plaint and hence,
the prayers made in the application may not be granted. Its
emphasis is on the absence of “1K” along with the words
polyurethane adhesive in the representation of the product of the
applicant in the plaint. This Court is of the opinion that the said
contention cannot be accepted, for the reason that the applicant
has various products, in which the registered trade mark “1K
PUR” is depicted. The descriptive words “moisture curing 1K
polyurethane adhesive” are in any case used in a descriptive sense
and these proceedings are really concerned with the depiction of
the registered trade “1K PUR” on the products of the applicant.
38.The judgments upon which the defendants placed reliance
i.e. Corn Products Refining Co. v/s. Shangrila Food Products Ltd.
(supra) and J.R. Kapoor v/s. Micronix India (supra) and judgments
of this Court in the case of Shelke Beverages Private Ltd., v/s.
Rasiklal Manikchand Dhariwal & Anr. (supra), Macleods
Pharmaceuticals Limited v/s. Intas Pharmaceuticals Ltd. & Ors.
(supra), Datamatics Global Services Limited v/s. Royal Datamatics ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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Private Limited (supra) and Ultratech Cement Ltd. & Ors. v/s.
Dalmia Cement Bharat Ltd. & Ors. (supra), pertain to the aspect
of commonly used trade description that cannot form part of trade
mark. But, in view of the observations made hereinabove, this
Court is unable to agree with the defendant that the ratio of the
said judgments can be of any assistance to the defendant in
resisting the interim reliefs claimed by the applicant in this
application. Reference to the Commentary of Venkateswaran on
Trade Marks and Passing Off (Seventh Edition) in the context of
submissions made on behalf of the defendant pertaining to Section
36 of the Trade Marks Act, also cannot be of much assistance to
the defendant. As noted hereinabove, the patents on which the
defendant has relied did not pertain to “1K PUR” or any process
or product concerning “1K PUR”. Merely because the said
expression is mentioned in the literature pertaining to the patents
does not mean that Section 36 would apply in the facts and
circumstances of the present case. Therefore, this Court finds that
the defendant has not been able to raise valid defence as regards its
use of “1K PUR” in the impugned trade mark “INOVA 1K PUR”.
39.The applicant has also filed leave petition for combining the
causes of action of infringement and passing off. The defendant
has been served and upon hearing the learned counsel for the
parties, this Court is of the opinion that sufficient ground is made
out on behalf of the applicant to press for the leave petition being
allowed. Accordingly, the leave petition is allowed. ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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40.In the light of the observations made hereinabove, this Court
is convinced that unless interim reliefs as prayed on behalf of the
applicant are granted, concerning infringement and passing off, it
will continue to suffer grave and irreparable loss, thereby
demonstrating that the balance of convenience is also in favour of
the applicant.
41.In view of the above, the interim application is allowed in
terms of prayer clauses (a), (b) and (c), which read as follows :
“a.Pending the hearing and final disposal of the suit, the
Defendants, its directors, proprietors, partners, owners,
servants, subordinates, representatives, stockists, dealers,
agents and all other persons claiming through or under them
or acting on their behalf or under their instructions be
restrained by an order and injunction of this Hon’ble Court
from manufacturing, marketing, selling, advertising, offering
to sell or dealing in the Impugned Products or adhesives or
any similar goods or any other goods bearing the impugned
mark 1K PUR (with or without any other mark), or any other
mark/label identical with or similar to or in any manner
comprising of the marks 1K PUR of the Plaintiff;
b.Pending the hearing and final disposal of the suit, the
Defendants, its directors, proprietors, partners, owners,
servants, subordinates, representatives, stockists, dealers,
agents and all other persons claiming through or under them
or acting on their behalf or under their instructions be
restrained by an order and injunction of this Hon’ble Court
from infringing in any manner the 1K PUR Registered Marks
of the Plaintiff bearing nos. 2567654, 2567653 and 1637794
in any manner and from using in relation to the Impugned
Products or adhesives or any other goods for which the 1K
PUR mark of the Plaintiff is registered or any goods similar to
the goods for which the 1K PUR mark of the Plaintiff are
registered, the impugned mark 1K PUR (with or without any
other mark) which is identical with or similar to the 1K PUR ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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or FEVICOL 1K PUR or 1K PUR Registered Marks of the
Plaintiff and from manufacturing, selling, offering for sale,
advertising or dealing in adhesives or similar goods or any
other goods bearing the impugned mark 1K PUR (with or
without any other mark);
c.Pending the hearing and final disposal of the suit, the
Defendants, its directors, proprietors, partners, owners,
servants, subordinates, representatives, stockists, dealers,
agents and all other persons claiming through or under them
or acting on their behalf or under their instructions be
restrained by an order and injunction of this Hon’ble Court
from committing the tort of passing off in any manner and
from manufacturing, marketing, selling, advertising, offering
to sell or dealing in the Impugned Products or adhesives or
any similar goods or any other goods bearing the impugned
mark 1K PUR (with or without any other mark), or any other
mark/label identical with or similar to or in any manner
comprising of the marks 1K PUR of the Plaintiff;”
MANISH PITALE, J. ::: Uploaded on - 25/04/2025 ::: Downloaded on - 30/08/2025 20:46:56 :::
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